Weekly Patent Update – Dec 2021 (2 of 3)

“Information to help you protect, manage and enforce your intellectual property (IP) rights in the Philippines.

This page provides practical information to help you make the most of your IP when doing business in?the Philippines.

If you plan to do business in?the Philippines,?or if you are already trading there, it is essential to know how to manage and enforce your IP as private property rights.

British businesses looking for access to intellectual property advice and support should contact our?South East Asia attaché team, based in the High Commission in Singapore

The Intellectual Property Office of the Philippines (IPOPHL) is the body responsible for operating the patent, industrial design and trade mark system in the Philippines.

Trade marks

The Philippine trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’ products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in the Philippines you can:

apply online via IPOPHL

make an international trade mark application and select the Philippines as a designated country. More information on international trade mark can be found in the international trade mark protection page

Good to know

Applications can be made in English or Filipino.

Non-residents must be represented by a local authorised individual e.g., a lawyer.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in the Philippines. The Philippines also provides protection for utility models for up to 7 years. Utility models are sometimes called “mini-patents” and require a lower level of inventiveness. All patent rights in the Philippines are subject to the payment of annual fees after they’ve been granted.

To protect your innovation with a patent in the Philippines you can:

File an application directly to IPOPHL.

File an international patent application and select the Philippines as a designated country. This can reduce the cost and effort of applying for patents in multiple countries. More information on international patents can be found in the international patent protection page.

File an ASEAN application via ASEAN Patent Examination Co-operation (ASPEC). This can reduce cost and effort of applying for patents in multiple ASEAN countries.

Good to know

The Philippines operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent. The Philippines does operate grace period where you can register a patent within 12 months of any public disclosure.

Applications can be made in English or Filipino.

Non-residents must be represented by a local authorised individual e.g., a lawyer.

Designs

In the Philippines, design protection initially last for 5 years and can be extended for two consecutive periods i.e. protection can last for a maximum of 15 years.

To protect your design in the Philippines you can:

File an application directly to IPOPHL.

File an international design application and select the Philippines as a designated country. This can reduce the cost and effort of applying for designs in multiple countries. More information on international designs can be found in the international design protection page.

Good to know

The Philippines operates a ‘first to file’ principle. If two people apply for an identical design, the first one to file the application will be awarded the protection. The Philippines does operate grace period where you can register a patent within 6 months of any public disclosure.

Applications can be made in English or Filipino.

Non-residents must be represented by a local authorised individual e.g., a lawyer.

Copyright

As in the UK,?copyright is an automatic right under?Filippino?law.??

Copyright in the Philippines protects original literary, scientific, and artistic work.

The length of protection varies but generally lasts for 50 years counted from 1 January of the year following the author’s death.?

Good to know?

Although protection is automatic, you may want to register your work with IPOPHL or the National Library. Registration is voluntary but helps to provide evidence of copyright ownership before a court or relevant enforcement authority.

Non-residents must be represented by a local authorised individual e.g., a lawyer.

Enforcing your rights

Businesses mention IP infringement and IP enforcement as issues when operating in the Philippines.

If your rights are infringed, there are 4 main options you can consider: administrative action, civil litigation, criminal prosecution, and customs however mediation is often an effective and lower cost option where possible.

Administrative enforcement can initiated through filing a complaint with IPOPHL. The process is similar to civil litigation action and authorities can impose fines and damages.

In practice, counterfeiting and piracy are typically dealt with via criminal prosecution. Raid action is possible with the national police or bureau of investigation and while their involvement is not required to start criminal proceedings it is advised to make any following actions easier.

If you suspect infringing goods are being imported into the Philippines, you can register their IP with customs official who have the power to monitor counterfeit or pirated goods at the border. The recordal is effective for 2 years and can be extended for a further 2 years.

More information

For specific support on IP enforcement, we have developed a manual including details on the laws and regulations as well as the IP enforcement procedures in Philippines.

Visit these pages for more information about doing business in the Philippines.

To report a market access barrier on IP in the Philippines.

UK ASEAN Business Council (UKABC) provides awareness on the latest opportunities in the region for UK companies looking to expand their operations into markets across Southeast Asia including Philippines.

British Chamber of Commerce in Philippines provide a variety of business advice, services and support to businesses in the Philippines.

The British High Commission in Philippines supports UK businesses in the Philippines.”

“Information to help you protect, manage and enforce your intellectual property (IP) rights in Indonesia.

If you plan to do business in?Indonesia,?or if you are already trading there, it is essential to know how to manage and enforce your IP as private property rights.

British businesses looking for access to intellectual property advice and support should contact our?South East Asia attaché team, based in the High Commission in Singapore

The Directorate General of Intellectual Property (DGIP) is the body responsible for operating the patent, industrial design and trade mark system in Indonesia.

Trademarks

The Indonesian trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’ products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in Indonesia you can:

Apply direct to DGIP

Make an international trade mark application and select Indonesia as a designated country. More information on international trade mark can be found in the protecting your trade mark abroad page.

Good to know

Applications must be made in Bahesa Indonesian. It is recommended to use a local lawyer to submit your application.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in?Indonesia. Indonesia?also provides protection for utility models for up to 10?years.?Utility models are sometimes called “mini-patents” and require a lower level of inventiveness.?All patent rights in Indonesia are subject to the payment of annual fees after they’ve been granted.???

To protect your innovation with a patent in Indonesia you can:

File an application?directly?to DGIP

File?an international?patent?application and select Indonesia as a designated country. This can reduce the cost and effort of applying for?patents?in multiple countries.?More information on international patents can be found in the protecting your patents abroad page.

File an ASEAN application via ASEAN Patent Examination Co-operation (ASPEC). This can reduce cost and effort of applying for patents in multiple ASEAN countries.

Good to know

Indonesia operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent. Indonesia does operate grace period where you can register a patent within 6 months of any public disclosure.

Applications should be made in Bahesa Indonesian. DGIP does offer a translation service however this can often cause delays.

It is recommended to use a local lawyer to submit your application.

Designs

In Indonesia, design protection initially last for 10 and cannot be extended.

To protect your design in the Indonesia you should file an application directly to DGIP.
?

Good to know?

Indonesia operates a ‘first to file’ principle. If two people apply for an identical design, the first one to file the application will be awarded the protection. Indonesia does operate grace period where you can register a patent within 6 months of specific public disclosures.

Applications must be made in Bahasa Indonesia and can be made either by the designer or an individual on your behalf e.g., a lawyer.

Copyright

As in the UK,?copyright is an automatic right under?Indonesian law.??? ? Copyright in Indonesia protects original?literary, artistic, and scientific works including computer programmes.

?The length of protection varies but generally lasts for?70 years counted from 1 January of the year following the author’s death.

Good to know?? ??

? Although protection is automatic, you may want to register your work with DGIP. Registration is voluntary but helps to provide evidence of copyright ownership before a court or relevant enforcement authority.

Declarations of copyright must be made in Bahasa Indonesian and can be made either by yourself or another individual on your behalf for example a lawyer.

Enforcing your rights

Businesses mention IP infringement and IP enforcement as issues when operating in Indonesia.

If your rights are infringed, there are 3 main options you can consider: civil litigation, criminal prosecution, and customs seizures however mediation via legal professionals is often an effective and lower cost option.

IP infringement is a criminal offence however enforcement is often difficult. In practice, only minor fines are given for IP crimes. IP infringement is a complaint-based crime where the IP holder needs to file a complaint with the police or DGIP before any action such as raids is taken.

If you suspect goods infringing your trade mark or copyright are being imported into Indonesia, you can notify the customs via the courts of suspected shipments however in practice seizures are rare.

More information

For specific support on IP enforcement we have developed a manual including details on the laws and regulations as well as the IP enforcement procedures in Indonesia.

Visit these pages for more information about doing business in Indonesia.

To report a market access barrier on IP in?Indonesia.

UK ASEAN Business Council (UKABC) provides awareness on the latest opportunities in the region for UK companies looking to expand their operations into markets across Southeast Asia including Indonesia.

British Chamber of Commerce in Indonesia provide a variety of business advice, services and support to businesses in Indonesia.

The British High Commission in Indonesia supports UK businesses operating in Indonesia.”

“Today, the Austrian Bundesrat (upper Chamber of the Austrian Parliament) unanimously decided not to object to the decision of the Nationalrat (lower Chamber of the Austrian Parliament) regarding the Protocol to the Agreement on a Unified Patent Court on Provisional Application (PPA).

As reported earlier, the Nationalrat had decided in favour of ratification of the PPA.

The bill can now be passed to the Austrian President (Bundespräsident) for signing the bill and ordering the deposit of the instrument of ratification with the General Secretariat of the Council of the EU.

Under Art 3(1) PPA, the Protocol will enter into force the day after Austria’s deposit, Austria being the thirteenth Signatory State to express its consent to be bound by the PPA.

The regularly updated overview on the ratification process, which has been compiled by the epi Litigation Committee, can be consulted here.”

“Responses will inform how the SEPs framework supports innovation, and whether change is needed.

A patent that protects technology which is essential to implementing a standard is known as a standard essential patent (SEP). Without using the methods or devices protected by these SEPs, it is difficult for a manufacturer (or ‘implementer’ of the standard) to create standard compliant products, such as smartphones or tablets.

Standards and patents can span across multiple disciplines and sectors. Access to?such patented technology on fair, reasonable and non-discriminatory (FRAND) terms for both the SEP holder and implementer?(the business using it)?is essential to ensure the market functions effectively.???

The?rise in the use of wireless technologies (3G, 4G and 5G) in telecommunications and the automotive industry (for example, in navigation systems), has seen?greater interest in?the licensing of patents and use of standards.? In many emerging?and high-growth markets,?such as the Internet of Things?(IoT)?and AI, products from different manufacturers need to be able to seamlessly ‘talk to’ each other to provide functionality for the consumer.? In some cases, meeting these technical standards will require the use of specific technologies protected by SEPs.

We recognise that overcoming some of the challenges may require global collaboration to reflect the fact that business is global, and business does not operate in isolation.

The purpose of the call for views is to better understand how the current SEPs framework encourages innovation and promotes competition.

The call for views will gather a wide range of evidence on the following:??

• the link between?SEPs, innovation?and competition and how these ?elements?interrelate with each?other
• the functioning of the market,?and?whether there is an imbalance?between the licensor and licensee
• transparency?in the SEPs ecosystem
• the?efficiency of SEPs licensing, functioning of the patent ?framework and ?FRAND litigation

The IPO’s Chief Executive Tim Moss said:

The Innovation Strategy?sets out?the?government’s long-term plan for delivering innovation-led growth, in which SEPs?play an important role. We want to ensure the UK’s framework remains robust and continues to be regarded as one of the best in the world, while keeping pace with global developments and challenges around SEPs and FRAND licensing.

The call for views will enable us to hear a broad range of views around the challenges faced by industry. It will help us better understand how our IP framework supports the SEPs ecosystem, while ensuring a fair balance is achieved between all entities involved, and the maximum benefit to UK innovation.

The call for views will run for 12 weeks, closing on 1 March at 23:45. After it closes, the government will assess the responses it receives and publish a summary of responses. These responses will inform the government’s decision on any next steps and action that may be required.

You can respond to the call for views via the document published on GOV.UK.

Note to editors:

The UK’s Innovation Strategy, launched in July 2021, is the starting point for the government’s long-term vision of how the UK will cement its role as a global leader in innovation and deliver the target of research and development (R&D) investment at 2.4% of?GDP.?This strategy recognises a strong IP system creates the confidence on which this long-term and sustainable success is built.”

“The U.S. Department of Justice, Antitrust Division announced yesterday that it is requesting public comment on a new draft policy statement concerning standards-essential patents (SEPs). The draft statement seeks to promote good-faith licensing negotiations and addresses the scope of remedies available to patent owners who have agreed to license their essential technologies on reasonable and non-discriminatory or fair, reasonable, and non-discriminatory (F/RAND) terms.

The draft statement is open to public comment for 30 days. The USPTO encourages stakeholders to submit comments on the draft statement to Regulations.gov.”

The UKIPO have updated the following section of the article ‘Licensing Intellectual Property’.

“Patents and ‘licences of right’

The IPO has a database of patents that are endorsed ‘licence of right’. This means that the patent holder has agreed to licence their patent to anyone who asks. You can search the database for patents endorsed licence of right to use the technology for your innovation or business.

If you have a patent, you can ask the IPO to endorse your patent with a licence of right in the register of patents. This means that you must grant a licence to anyone who wants one.

The licence will still be an ordinary, commercial licence and the terms and fees will be a private matter between you and the licensee or licensor. The IPO won’t investigate the validity of a licence unless you can’t agree the terms under a licence of right.

The main advantages of having your patent endorsed with a licence of right is that it lets other people know you are happy to licence your intellectual property. The IPO reduces its annual renewal fees to half the usual cost if your patent is endorsed licence of right.

To apply for a licence of right endorsement, fill in Patents Form 28. Your application should reach the IPO at least 28 working days before your next renewal due date. If you would like to licence any of the IP on the database, you will have to approach the licensor directly. You can find the patent owner’s contact details in the database.

You can cancel a licence of right endorsement at any time by filling in Patents Form 30. You will have to pay the standard renewal fees, which will be backdated to your renewal date.

The IPO will advertise your cancellation request in the Patents Journal for 4 weeks to allow anyone to oppose your cancellation request. Your licence of right entry will be cancelled:

• if there are no existing licences
• you have paid the balance of renewal fees
• any opposition to the cancellation has been dealt with

You don’t have to tell the IPO if you grant a licence, but it’s better if you do. You should do this within 6 months. The licensee may lose some rights if you don’t. The licensor usually tells the IPO by completing and signing Patents Form 21 stating the type of licence. If the licensee tells the IPO, they will require additional information:

• the date of the agreement
• the names and addresses of the parties involved
• the patent number”

“In accordance with Article 112(1)(a) EPC, Technical Board of Appeal 3.3.02 has referred the following points of law to the Enlarged Board of Appeal by interlocutory decision of 11 October 2021 in case T 116/18:

If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having been filed after that date (post-published evidence):

1. Should an exception to the principle of free evaluation of evidence (see e.g. G 3/97, Reasons 5, and G 1/12, Reasons 31) be accepted in that post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on the post-published evidence?

2. If the answer is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have considered the effect plausible (ab initio plausibility)?

3. If the answer to the first question is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have seen no reason to consider the effect implausible (ab initio implausibility)?

The text of the referral in English is available on the EPO website under epo.org/law-practice/case-law-appeals/recent/t180116ex1.html.

The Enlarged Board of Appeal considering the referral will be composed as follows: C. Josefsson (Chairman), I. Beckedorf, F. Blumer, T. Bokor, P. Catallozzi, P. Gryczka, A. Ritzka.

Third parties are hereby given the opportunity to file written statements in accordance with Article 10 of the Rules of Procedure of the Enlarged Board of Appeal (OJ EPO 2015, A35) in one of the official languages of the EPO (English, French or German).

To ensure that any such statements can be given due consideration they should be filed by 29 April 2022 with the Registry of the Enlarged Board of Appeal, quoting case number G 2/21, and should be marked for the attention of Mr Nicolas Michaleczek (EBAamicuscuriae@epo.org).”

The following section of the PCT Applicant’s Guide has been updated, as follows.

“CA.01 FORM FOR ENTERING THE NATIONAL PHASE. Applicants are encouraged to use the National Entry Request (NER) online solution at: https://s1.ised-isde.canada.ca/opiccipo-brevets-patents-pct-nationale-national to submit requests to enter the national phase. The National Entry Request (NER) online solution allows users to comply with all requirements to enter the national phase in Canada. Any information not provided directly on screen may be provided via an attached document. An optional form for entering the national phase is also available (see Annex CA.II).”